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Even Under BRI, “A” Does Not Mean “Two”

The US Court of Appeals for the Federal Circuit determined that the Patent Trial and Appeal Board (PTAB or Board) erred in interpreting the claim term “a statistical analysis” as “two statistical analyses” under the broadest reasonable interpretation (BRI) standard. In re Varma, Case No. 15-1502 (Fed. Cir, Mar. 10, 2016) (Taranto, J).

This appeal arose from reexamination proceedings in which the challenged patents were directed to statistical analyses of investment data. The claims recited “a statistical analysis request corresponding to two or more selected investments.” The prior art taught a statistical analysis request of a single investment, but also taught that multiple such requests can cover multiple investments. The Board found that these prior art teachings met the “statistical analysis” limitation, implicitly interpreting “a statistical analysis” to cover “two statistical analyses.” The patent owner appealed.

On appeal, the Federal Circuit found the Board’s interpretation unreasonably broad. The Court framed the issue as “whether ‘a’ can serve to negate what is required by the language following ‘a’: in this instance a ‘request’ (a singular term) that ‘correspond[s]’ to ‘two or more selected investments.’” The Court explained that the article “a” cannot do so, finding that the claimed request must itself correspond to at least two investments. By analogy, the Court reasoned that “[f]or a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.” The Court vacated the Board’s rejection of the claims for reconsideration under the correct claim construction.